Appeal No. 2006-1644
Application No. 10/666,924
As stated by a predecessor of our reviewing appellate court in
In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981):
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or
all of the references. Rather, the test is what the
combined teachings of the references would have suggested
to those of ordinary skill in the art.
The motivation for combining the teachings of Takada and Kovacs
would have been to produce, using Takada’s simple and compact
structure (page 7), a small device such as a chain saw as taught
by Kovacs (page 2).
The appellants argue that the Popular Science article “The
Little Engine That Could”, published in 1993, two years after
the appellants’ effective filing date, shows that reducing the
size of a four stroke engine such that it is useful in hand held
power tools requires components such as valves that are smaller
than those of larger engines and have to be designed and
manufactured specifically for the smaller engine (brief, page
10; reply brief, page 5). That argument is not persuasive
because it would have been readily apparent to one of ordinary
skill in the art that making Takada’s engine small enough to be
used on a chain saw as disclosed by Kovacs would require parts
which are smaller than those of larger engines. The appellants
argue that the Popular Science article shows that characterizing
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